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Domino’s Pizza has filed a complaint at the National Arbitration Forum (NAF) after failing to secure a .pizza domain name.
The international franchise company did not register the dominos.pizza domain during the sunrise period for .pizza registrations, which closed on November 29.
The domain was then registered by an individual called CJ Sculti on December 7.
But in a complaint filed under the Uniform Domain Name Dispute Resolution Policy at the NAF, Domino’s has attempted to wrestle the domain back from Sculti.
Domino’s paid $1,300 to file the complaint.
Sculti appears to be chief executive of a hosting company called Data Wagon.
The .pizza generic top-level domain is managed by domain name registry Donuts. According to the Donuts website there are currently 3,257 registrations for .pizza addresses.
Brian Winterfeldt, partner at law firm Katten Muchin Rosenman, said it was surprising that Domino’s did not register the domain given the “clear nexus” between the gTLD and its business.
“Even if Dominos had no intention of using this domain actively in connection with its business it seems to be a clear candidate for a defensive registration to avoid precisely the kind of cybersquatting that has occurred here,” he added.
But nevertheless Winterfeldt said Dominos was "essentially certain to prevail" in the UDRP given the clear trademark rights, the lack of any legitimate rights or interest in the name by the registrant, and the high probability that the domain was registered in bad faith.
“This kind of incident, unfortunately, is a common occurrence, illustrating the challenges for all famous brands posed by the new gTLD program, and demonstrating why it is so important for brand owners to partner with trademark counsel knowledgeable about ICANN matters,” Winterfeldt added.
David Taylor, partner at law firm Hogan Lovells, speculated that the failure to register the domain may have been a conscious decision “given the costs of many applications across many gTLDs”.
“We have clients who are securing their main brands in relevant new gTLDs and others who are waiting to see if their brand is registered by unscrupulous third parties and then taking action. It does cost more to enforce on a specific domain name, but then multiple sunrise applications across new gTLDs also is a significant burden on brand owners,” he said.
Taylor added: “There is no right or wrong strategy and it depends on many factors. In any event, I would think it highly likely that Domino's will succeed in recuperating the domain as it is clear that the registrant must have had the pizza company in his mind when registering the domain name.”
Domino’s told TBO it would provide a comment but had not done so at the time of publication.
Sculti has been contacted for comment.
UDRP, Domino’s, domain names, trademarks, .pizza, gTLDs